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15 June 2012

The 2012 amendments introduce, for the first time, what could be considered to be safe harbour provisions, for the benefit of intermediaries, into the Indian Copyright Act, 1957. These provisions have not specifically been referred to as safe harbours although it is anticipated that that is precisely what they will be — possibly with Section 52(1)(b) of the (amended) Copyright Act applying to ISPs and Section 52(1)(c) applying to OSPs. As such, their provisions are a fairly radical departure from the law in force prior to the coming into force of the Copyright (Amendment) Act, 2012 (i.e. the earlier law).

This is not so much because the earlier law completely failed to grant any protection to intermediaries in cases of secondary copyright infringement — possibly occurring by the upload of infringing user generated content on to the websites of intermediaries without their knowledge — but because the accordance of protection to intermediaries involved considerable interpretative legerdemain as far as the copyright statute was concerned, and courts were not always entirely sympathetic to intermediaries. In fact, in the decision pronounced on July 29, 2011, in Super Cassettes Industries Ltd. v. MySpace Inc. & Another [IA Nos.15781/2008 & 3085/2009 in CS(OS) No. 2682/2008], a Single Judge of the Delhi High Court went so far as to suggest that intermediaries screen all user generated content to check for infringement prior to making the content available online.

Holding that post infringement measures may not be prima facie sufficient safeguards for the infringement (in India), the court held:

85(d) Fourthly, if there is any due diligence which has to be exercised in the event of absence of any provision under the Act, the said due diligence must be present at the time of infringement and not when the infringement has already occurred so that the infringement can be prevented at the threshold and not when the same has already occurred. The post infringement measures like the ones informed by the defendants which are in compliances of US statute may hold good in US due to the legislative measure but the same are not operative in India. Such post due diligence on the ground of some inherent helplessness which the defendants are pleading only because they are sitting on internet or cyberspace may not be correct as the law does not exclude cyberspace from its purview to do infringements there. The defendants have sufficient means to modify the work by taking licenses from the users, adding advertisements to the works of the plaintiff. Consequently, the effective means for pre infringement enquires arealso necessarily have to be performed by the defendants only. If the defendants state that there no means to do so due to some impossibilities, the defendants must take preliminary measures at the time of modification of the works and prior to making them available to the public so as to ensure that the same does not infringe any ones copyright.

88. There is no reason to axiomatically make each and every work available to the public solely because user has supplied them unless the defendants are so sure that it is not infringement. If the defendants cannot exercise diligence of this nature, the necessary inferences can be drawn is that the defendants are making itself liable for infringement by its inactions to enquire about the source of the works at the appropriate stage.

89. Thus, even if the post infringement measures which may be acceptable in certain legal systems due to the specific legislations may not be hold good in India when the statute in India does not culls out any such exception as mitigating factor.

This could easily be used to demonstrate that it is possible that there is an emerging judicial trend towards requiring due diligence / content clearance to be conducted by intermediaries regardless of practical feasibility. However, it would appear that the 2012 amendments to the Copyright Act have significantly dampened the development of this possible trend through the incorporation of two new provisions in the statute stating, in their entirety, that the following acts are exceptions to copyright infringement:

52(1)(b) the transient or incidental storage of a work or performance purely in the technical process of electronic transmission or communication to the public;

52(1)(c) transient or incidental storage of a work or performance for the purpose of providing electronic links, access or integration, where such links, access or integration has not been expressly prohibited by the right holder, unless the person responsible is aware or has reasonable grounds for believing that such storage is of an infringing copy:

Provided that if the person responsible for the storage of the copy has received a written complaint from the owner of copyright in the work, complaining that such transient or incidental storage is an infringement, such person responsible for the storage shall refrain from facilitating such access for a period of twenty-one days or till he receives an order from the competent court refraining from facilitating access and in case no such order is received before the expiry of such period of twenty-one days, he may continue to provide the facility of such access;

As can be seen, under these Sections, the transient or incidental storage of a work or performance would not amount to copyright infringement if it was:

It was ‘purely in the technical process of electronic transmission or communication to the public’ under Section 52(1)(b); or

For the purpose of providing not explicitly unauthorised electronic links, access or integration, unless the person responsible(presumably for the storage) were aware or had reasonable grounds to believe that the storage was of an infringing copy under Section 52(1)(c).

In the broadest strokes possible, it appears that Section 52(1)(b) refers to how the storage of content is effected — i.e., as part of a technical electronic process, while Section 52(1)(c) refers to why the storage is effected — i.e., in order to make available certain content. The 'how' and the 'why' are, however, likely to usually be two sides of the same coin with the infringement contemplated by one Section not being entirely independent of the other.

In light of this, the circumstances under which the transient or incidental storage of content would not amount to infringement under the two Sections appear to overlap to an extent especially since the ‘communication to the public’ contemplated by Section 52(1)(b) would in all probability result in the ‘access’ contemplated by Section 52(1)(c); pertinently, the term ‘communication to the public’ in Section 2(ff) of the Copyright Act has itself been defined in a way which does not actually require any person to view or access the content communicated. As far as copyright law is concerned, ‘communication to the public’ is effectively ‘transmission to the public’.

Nonetheless, if communication to the public did not result in access at some point of time, it would be unlikely that a rights owner would know of the communication / transmission unless, possibly, it was tracing a route through which information had been transmitted sans actually having been accessed by anyone. The moment access was to become involved though, Section 52(1)(b) would not operate independently, and the provisions of Section 52(1)(c) would come into play as well. This latter Section is structured differently from Section 52(1)(b). Under Section 52(1)(c):

The ‘unknowing’ storage of infringing content for the purpose of providing not explicitly unauthorised electronic links, access or integration to the content would not be deemed to be infringement under Section 52(1)(c).

Further, Section 52(1)(c) not only contains a notice and takedown (i.e. an ‘NTD’) procedure which is absent in Section 52(1)(b) but also explicitly states in its main body that it would not apply in those cases where the person responsible (presumably for the storage) was aware or had reasonable grounds for believing that such storage was of an infringing copy.

Reading the main body of Section 52(1)(c), the intention of the legislature appears to be relatively clear — the Section is designed to protect intermediaries from allegations of secondary infringement and not from acts of primary infringement. The first part of the provision refers to the intermediary not being liable in respect of certain links, access, and integration which the rights owner has not explicitly forbidden, and the second part states that the exception to copyright infringement contained in the first part will only apply if the intermediary has no good reason to believe that the relevant content is infringing.

To address cases where content is in fact infringing — or is believed to be infringing by a rights owner — Section 52(1)(c) contains an NTD procedure in a proviso to its main body which requires an intermediary to take down infringing content (i.e. ‘refrain from facilitating such access’, in the words of the statute) for a period of twenty-one days if the rights owner complains to it that the content is infringing in writing. Pertinently, though, the rights owner is not actually explicitly required to send a notice to the intermediary under the letter of the law although one might reasonably predict that the rights owner would be expected to do so by the judiciary (as that is what the scheme of Section 52(1)(c) envisages).

Although Section 52(1)(b) does not contain an NTD procedure, considering that the kinds of infringement contemplated by Sections 52(1)(b) and (c) may not be entirely independent, in those cases where there is in fact an overlap, it would probably be possible for a rights owner to send a takedown notice for infringement contemplated by Section 52(1)(b) within the framework of the Act, requiring takedown of the impugned content for at least twenty-one days, with reference to Section 52(1)(c).

Further, once a rights owner sends a notice, he has a window period of twenty-one days within which he should ideally obtain a court order for continued takedown and, within which he should, presumably, provide a copy of the order to the intermediary. The NTD procedure states that if no such order is received (by the intermediary) before the expiry of the twenty-one day period, the intermediary may continue to provide the facility of access to the relevant content.

What is critical to note here though is that:

The rights owner is not explicitly required to send a written complaint of infringement to the intermediary in the first place; and

The intermediary is not required to put content back up once the twenty-one day period is over in those cases where a court order for continued take down has not been obtained.

Although one interpretation of the safe harbour provisions is that if no court order is obtained within the twenty-one day period, there is no legal impediment to the intermediary putting content back up. However, this may not be entirely accurate, particularly in those cases where the rights owner has provided the intermediary with convincing proof of the infringing nature of particular content.

To put specific content which the intermediary knows or should have known is infringing back up after a period of twenty-one days, simply because a court order has not been obtained by the rights owner, could cause the intermediary to fall foul of the main body of Section 52(1)(c) which, firstly states that it applies to certain links, access and integration which have not been prohibited by the rights owner, and, secondly, states that the exception to copyright infringement applies to those cases where the intermediary does not have knowledge of infringement.

Therefore, reuploading specific content which the intermediary has been told (in convincing terms) is infringing by its owner could potentially take an intermediary from having committed accidental secondary infringement which is not punishable under the safe harbour provisions to committing intentional primary infringement for which the intermediary could be held to be liable. For liability not to ensue, the proviso to Section 52(1)(c) would have to completely supersede the main body of the Section, and the technicality of a court order not having been obtained would have to be deemed important enough for the fact that the intermediary could be considered to have had knowingly committed primary infringement to be overlooked.

Due to this, even if a court order for the continued takedown of impugned content had not been provided to the intermediary, putting allegedly infringing content back up would not be a risk free proposition for the intermediary, particularly in cases where the intermediary had been provided with convincing proof of ownership of the content by the rights owner and had been told that the content was infringing. In addition to this, the overlap in the terms ‘communication to the public’ Section 52(1)(b) and ‘access’ in Section 52(1)(c) could come back to haunt an intermediary.

Section 52(1)(b) does not contemplate an NTD procedure at all. As such, even if a court order was not obtained for the purpose of enforcing the continued takedown of impugned content under Section 52(1)(c), a rights owner could conceivably require continued takedown of allegedly infringing content under Section 52(1)(b) which does not require it to obtain a court order for continued takedown, and contains absolutely no indication that a rights owner may not send an infringement notice with reference to it.

Of course, given the overlap, the rights owner could send a notice under both Sections 52(1)(b) and (c) — the latter requires takedown of allegedly infringing content for a minimum of twenty-one days, the former contains no requirement that a court order be obtained for continued takedown. Further, if the infringement notice also referred to the 2011 Intermediary Rules under the Information Technology Act, the intermediary would be obliged to take down content within 36 hours of receving the notice, if it was in fact infringing. While an intermediary could take down impugned content on the basis of having received a notice under the Intermediary Rules by way of caution and prudence, the intermediary would probably not have to effect continued takedown if the rights owner failed to demonstrate that the content was in fact infringing.

Although the Intermediary Rules do not speak of putting content back up, if the rights owner completely failed to demonstrate to the intermediary that the content was in fact infringing, a harmonious reading of the copyright statute and the Intermediary Rules would appear to indicate that, despite the Intermediary Rules containing no provision for the 'reupload' of content, it would be possible for an intermediary to reupload non-infringing content after the twenty-one day period contemplated by the Copyright Act.

The manner in which the Intermediary Rules and the safe harbour provisions of the Copyright Act interact is, however, spectacularly unclear and attempts to read them together must necessarily be speculative till judicial interpretations are available. Nonetheless, with a little creativity, it should not be difficult for a rights owner to bypass the (possibly non-binding) requirement that a court order be obtained within twenty-one days for the continued takedown of infringing content. And, in cases where an intermediary suspects that allegedly infringing content is actually non-infringing, even if it had taken the impugned content down within 36 hours of the receipt of a complaint by way of abundant caution, the intermediary could presumably inform the rights owner that, should the rights owner not provide it a court order for continued takedown within twenty-one days, the intermediary would reupload the content suspected not to be infringing on the understanding that it was in fact not infringing.

Finally, while all references in this article to infringement thus far have referred to copyright infringement, it is worth noting that copyright infringement — if it is in relation to the content in a product — is unlikely to occur in isolation. It will invariably occur along with trade mark infringement, to which a safe harbour akin to the one in the Copyright Act does not apply (although there is a provision in the nature of a safe harbour contained in Rule 3(3) of the Intermediary Rules). So, regardless of whether or not a court order contemplated by Section 52(1)(c) of the Copyright Act is obtained, and regardless of whether or not an intermediary may be held liable for copyright infringement, an intermediary may be found to have committed infringement with reference to forms of intellectual property other than copyright, particularly in light of the prevailing uncertainty relating to the interaction of Sections 79 and 81 of the Information Technology Act.

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